WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ICC Business Corporation FZ LLC v. Shashank Sharma
Case No. D2018-1919
1. The Parties
Complainant is ICC Business Corporation FZ LLC of Dubai, United Arab Emirates, represented by Bird & Bird LLP, United Kingdom of Great Britain and Northern Ireland (“U.K.”).
Respondent is Shashank Sharma of Mumbai, Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name <t20worldcup.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2018. On August 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 20, 2018.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on October 2, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is the global governing body for the game of cricket, and is responsible for the organization, governance and staging of all cricket’s major international tournaments, including the International Cricket Council (“ICC”) Cricket World Cup and the ICC T20 World Cup. The ICC T20 World Cup is the international championship of Twenty20 cricket, which was first officially launched on July 26, 2007. Twenty20 Cricket is short form of cricket which is often abbreviated as “T20”. Complainant owns valid and subsisting registrations for the T20 WORLD CUP trademark, and related trademarks including TWENTY20 WORLD CUP, ICC TWENTY20 WORLD CUP, and ICC T20 WORLD CUP, in numerous jurisdictions around the world. Complainant also owns common law rights in the T20 WORLD CUP trademark, and related trademarks.
Respondent registered the disputed domain name on August 14, 2007. Currently, the disputed domain name is parked by Sedo and resolves to a website that contains pay-per-click advertising links for “online games” as well as an offer to “buy this domain” and “ICC T20 World Cup”.
5. Parties’ Contentions
Complainant asserts that it enjoys significant goodwill and reputation in an extensive, worldwide portfolio of registered and unregistered intellectual property rights protecting the distinctive T20 WORLD CUP trademark, plus various derivatives and permutations related to the ICC T20 World Cup tournament. The most recent biannual edition of the ICC T20 World Cup tournament in 2016 covered 48 matches and resulted in cumulative in-home viewership of 730 million around the world, in addition to a further 320 million video viewers online across the official event made available by Complainant through its website, app, and various other online social media platforms. Complainant asserts that the disputed domain name — simply the combination of the phrase “WORLD CUP” after the element “T20” — shows a clear intention by Respondent to associate itself with Complainant and its T20 WORLD CUP trademarks.
Complainant further asserts that the failure of the disputed domain name to resolve to a proper, functioning website does not constitute a legitimate noncommercial of fair use of the disputed domain name. Complainant is not aware of any evidence of use, or demonstrable preparations for use, of the disputed domain name in connection with any bona fide offering of goods or services. Complainant has not entered into any formal assignment with Respondent. And Complainant, to the best of its knowledge, asserts that Respondent is not known by the disputed domain name.
Complainant asserts that the date that the first T20 World Cup was officially launched on July 26, 2007 predates the date Respondent registered the disputed domain name on August 14, 2007. Complainant asserts that such timing of the disputed domain name by Respondent indicates registration in bad faith to create a likelihood of confusion with Complainant’s T20 World Cup tournament. Complainant also asserts that cricket is the national sport of India, followed by over one billion people and played by over 800 million people in India, thus any claim that Respondent was unaware of Complainant or the T20 World Cup tournament is not credible. Finally, Complainant asserts that parking the disputed domain name with pay-per-click advertising constitutes use in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identicalor Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant submitted a trademark “Portfolio Snapshot” that lacked registration numbers and priority dates, and connoted that several applications are in various stages of examination, publication and objection. However, the Panel takes note of Complainant’s still numerous T20 WORLD CUP and related trademark registrations, including T20 WORLD CUP (U.K. Reg. No. 00002513345) (registered July 17, 2009). Furthermore, Complainant provided evidence that it has unregistered common law rights in the T20 WORLD CUP and related trademarks, including in India where Respondent is located, which appear to date back as early as September 6, 2007.
With Complainant’s rights in the T20 WORLD CUP mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the gTLD “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. In the instant proceeding, the disputed domain name is essentially identical to Complainant’s T20 WORLD CUP mark because it incorporates this mark in its entirety, properly disregarding the “.com” gTLD.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the T20 WORLD CUP mark and in showing that the disputed domain name is identical or confusingly similar to this mark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the Policy.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its T20 WORLD CUP mark and that Respondent does not have any rights or legitimate interests in the disputed domain name. Respondent has not made any bona fide or fair use of the disputed domain name in connection with any product or service. Rather, Respondent has used the disputed domain name to redirect Internet users to a parked website with pay-per-click advertisements for “online games” and “ICC T20 World Cup.” Beyond the screen grab evidence submitted by Complainant, the Panel further notes that these hyperlinks lead visitors to sporting event retailers. Furthermore, the Panel notes that the parked website contains a hyperlinked offer to “buy this domain” through Sedo.com for USD 90. Such use of the disputed domain name, to trade off Complainant’s T20 WORLD CUP mark, cannot represent any bona fide offering of goods or services. WIPO Overview 3.0, section 2.9. Finally, it is evident that Respondent is not known by the disputed domain name.
Given that Complainant has established with sufficient evidence its prima facie case, and given Respondent’s failure to file a response, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In the instant proceeding, Complainant asserts that it first used the T20 WORLD CUP mark and related trademarks commensurate with the official “launch of the first edition of the tournament on 26 July 2007”, and that this predates the August 14, 2007 registration date for the disputed domain name. To substantiate this assertion, Complainant submitted evidence of third party use of these marks in the Times of India and the “www.livemint.com” website dated September 6, 2007 and October 8, 2007 respectively, as well as Complainant’s own use of these marks on ICC-CRICKET.COM as of August 31, 2009. Complainant also submitted a Wikipedia article which confirmed that “[t]he first tournament was in 2007 in South Africa where India defeated Pakistan in the final”, or more specifically that, as confirmed by Complainant, this event took place from September 11 to 24, 2007. While the specific evidence in this proceeding fails to establish priority use of the T20 WORLD CUP or related trademarks, the Panel again takes note of archived news coverage from the months preceding the tournament which references the “Twenty20 World Cup” to be held in South Africa in September. See “www.rediff.com”, Twenty20 WC: India, Pak in the Same Group (June 13, 2007); Sports Australia, Twenty20 World Championship Schedule Announced (May 15, 2007). In the absence of any response from the Respondent, such publicly available news coverage and third party use makes it evident to the Panel that Respondent intended to capitalize on Complainant’s nascent trademark rights through registration of the disputed domain name in bad faith. WIPO Overview 3.0, section 3.8.2.citing MADRID 2012, S.A. v. Scott-Martin-MadridMan Websites, WIPO Case No. D2003-0598.
Furthermore, Respondent’s use of the disputed domain name to park a pay-per-click website advertising links related to “online games” and to Complainant itself in order to generate click through revenue suggests bad faith registration and use under Policy paragraph 4(b)(iv). See, e.g., Hardee’s Food Systems, Inc. v. Morgan Kelsey, WIPO Case No. D2011-1757.
Finally, when coupled with the open offer to “buy this domain” through Sedo.com for USD $90, the Panel views Respondent’s registration of the disputed domain name as bad faith registration and use primarily for the purpose of selling the disputed domain name to Complainant under Policy paragraph 4(b)(i). WIPO Overview 3.0, section 3.1. This is especially the case where the disputed domain name is effectively identical to Complainant’s T20 WORLD CUP trademark, and the disputed domain name was registered in anticipation of the T20 World Cup tournament.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <t20worldcup.com> be transferred to Complainant.
Brian J. Winterfeldt
Date: October 16, 2018